Complainants are Workman Publishing Co. Inc. and Patricia Schultz of New York, New York, United States of America, represented by Cowan, DeBaets, Abrahams & Sheppard, LLP, United States of America.
Respondent is Yuval Bitan of Evanston, Illinois, United States of America. 2. The Domain Name and Registrar
The Domain Name (“the Domain Name”) is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2011. On May 4, 2011, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the Domain Name. On the same day, Network Solutions, LLC. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 30, 2011. The Response was filed with the Center on May 26, 2011.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on June 7, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On June 10, 2011, Complainants submitted an unsolicited Supplemental Filing requesting the Panel to consider it because “it is responsive to new issues raised by Respondent’s May 26, 2011 response.” On June 13, 2011, Respondent also submitted an unsolicited Supplemental Filing simply stating that he “would like to use this opportunity . . . to elaborate on the phone conversation I had on April 11, 2011 with Ms. Pat Upton.” Neither the Policy nor the Rules, provide for Supplemental Filings by either party except in a few narrow instances. The Panel has the sole discretion to determine its admissibility.
The Panel holds that it will admit part “I” of Complainant's supplemental Filing on the ground that the Panel is persuaded this portion of the filing falls within the ambit of a new or unanticipated issue raised by the Response. The Panel will not, however, admit parts “II” and “III” of Complainant’s Supplemental Filing because Complainants have not demonstrated these sections address new or unanticipated issues. The Panel further holds that it will not consider Respondent’s Supplemental Filing because as Respondent candidly states, his Supplemental Filing elaborates on the negotiation over the price of the Domain Name that he already addressed in his Response. 4. Factual Background
Complainants are Patricia Schultz, author of the book 1,000 Places to See Before You Die (“the Book”), and Workman Publishing Co. (“Workman”), an independent publisher and the publisher of the Book. Ms. Schultz also authored a series of subsequent related works, including the books “1,000 Places to See in the U.S.A. and Canada Before You Die”, “1,000 Places to See Before You Die Traveler’s Journal”, and various related products, including calendars, board games and puzzles.
Complainants own a number of United States (“U.S.”) registrations for the trademark 1,000 PLACES TO SEE BEFORE YOU DIE (“the Mark”), which are registered in connection with a variety of goods and services. They include:
United States Reg. No. 3,002,424, filed on February 20, 2004, in international class 28 for board games and jigsaw puzzles, and registered on September 27, 2005.
United States Reg. No. 3,002,425, filed on February 20, 2004, in international class 16 for calendars and registered on September 27, 2005.
United States Reg. No. 3,402,248, filed on October 21, 2004, in international class 9 for video discs, pre-recorded DVDs featuring movies and music, and registered on March 25, 2008.
United States Registration No. 3,137,137, filed on February 22, 2005, in International Class 16 for a series of non-fiction books in the field of travel, and registered on August 29, 2006, and claiming a first use in commerce as of 2003.
United States Reg. No. 3,445,645, filed on October 21, 2004, in international class 39 inter alia for computer services in the field of travel via the Internet, and in international class 41, inter alia for various entertainment services, educational services and on-line publication of electronic books, magazines and journals in the field of travel, registered on June 10, 2008, and claiming a first use in commerce as of September 2003.
The Book proved to be an early success soon after it was published in September 2003, and it garnered widespread attention in the press. Within 4 months after publication through January 2004, the Book had gross sales of about 235,000 units and made it on to the New York Times Bestseller List in 2003 and 2004. It is undisputed that from the date it was published (September 2003) Complainants have continually advertised and sold the Book as well as the other products mentioned above.
Complainants originally registered the Domain Name on July 21, 2004 and created a website related to the Book and Workman’s other publications. They inadvertently allowed that registration to lapse on or about July 20, 2007.
It is undisputed that Respondent is not affiliated with Complainants, nor have Complainants ever authorized, licensed or otherwise permitted Respondent to use the Mark or any of their Registrations for any purpose.
Respondent is Yuval Bitan. He describes himself as a consultant and entrepreneur on various Internet ventures. He claims to have begun working on a user generated content site “SeeBeforeYouDie,” which remains an active site. It covers over 5,000 places from 184 countries and, among other things, it provides users with the means to add and rate places they like. Respondent registered the domain name in December 2004 for use in conjunction with his website. In 2005 and 2006 he registered other versions of this domain name, for example, and . Respondent tried to obtain a U.S. trademark registration for “See Before You Die” with the U.S. Patent and Trademark Office (PTO) but it was denied.
Respondent acquired the Domain Name in August 2007.
It is undisputed that a representative of Complainant Workman (P. Upton) contacted Respondent by email on March 30, 2011 to purchase the Domain Name. Respondent answered by email that he would consider “any offers” but that “it will have to be a serious offer for me to consider selling it.” Respondent clarified by email that he wanted USD 10,000 for the Domain Name stating: “I own this domain for some time [sic], and even that I haven’t use it for any of my projects yet, it was on my to-do list.” Ms. Upton suggested the parties discuss the matter further by phone, which they did. Complainants state in their Complaint, and Respondent does not deny in his Response, that Respondent knew of the Book and Complainants’ trademark registrations for the Mark. 5. Parties’ Contentions A. Complainants
Complainants own rights in the Mark by virtue of their U.S. trademark registrations for it and their continuous use of the Mark since September 2003. The Domain Name is identical to the Mark because it incorporates the Mark in its entirety. Moreover, 4 of Complainant’s U.S. trademark registrations for the Mark were registered before 2007, the year in which Respondent registered the Domain Name.
Complainants have not authorized or given permission to Respondent to register the Domain Name or to use it or the Mark. There is no evidence Respondent is or has ever been commonly known by the Mark or acquired any rights to the Mark.
There is no evidence that Respondent has ever operated a bona fide or legitimate business under the Domain Name. Nor is there evidence of Respondent’s use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. Respondent has not used the Domain Name in any way during the three and a half years since he registered it. Respondent claims that his prior application to register “See Before You Die” with the PTO is evidence of his rights in that mark and that the PTO refused to register it because it could not be trademarked. The PTO issued numerous office actions blocking Respondent’s application each time citing Complainants’ preexisting applications for the Mark. On April 13, 2009, the PTO issued a final office action ruling that Respondent’s mark was confusingly similar to the Mark. Respondent did not respond and his application was deemed abandoned.
Regarding Respondent’s bad faith registration of the Domain Name, Complainants assert that Respondent registered the Domain Name within about 1 month after Complainants inadvertently allowed their registration in it to lapse. At that time, the Book had been in print for about 4 years. Given the national and local press for the book, the critical acclaim for it, as well as its significant sales and status on the New York Times Bestseller List, it is unsurprising that Respondent admitted he was aware of the Book and Complainants’ rights in the Mark. That is, Respondent selected and registered the exact title of a New York Times Bestselling book (that he admittedly knew) 1 month after Complainants’ registration in the Domain Name lapsed and while they continued to advertise and sell the Book and related products. Respondent did not commercialize the Domain Name at the time Respondent obtained it in August, 2007, or any time thereafter, whether for any bona fide or legitimate business or otherwise. For the last three and a half years since Respondent registered the Domain Name, Respondent parked it as a placeholder page featuring various links to advertisements.
Regarding Respondent’s bad faith use of the Domain Name, Respondent requested Complainants pay USD 10,000 to acquire the Domain Name, an amount far in excess of the cost of the registration. Complainants rejected the offer and were forced to file this proceeding. B. Respondent
Respondent claims that he purchased the Domain Name not in bad faith but because he has a legitimate interest to it. He explains that: (1) in 2004 he began working on a user generated content site using the domain name which remains an active site today. The idea was fresh – let the users add and rate the places they like; (2) in December 2004 he registered the domain , and then registered other versions of it like and during 2005 and 2006; (3) during all this time his site was the only website that used the domain name “See Before You Die” and provided travel information on the Internet; and (4) in July 2007 when Network Solutions notified Respondent that the Domain Name was “about to be free”, he decided to purchase it and did so in August 2007. Respondent claims that he parked the Domain Name “on Network Solutions” but that like the “other domains [he] owns, it has been pointing for some time to [his] main site – SeeBeforeYouD.” Respondent further claims that this was the case until a couple of months ago when he made some changes to his server.
With regard to his negotiation with Ms. Upton over the Domain Name, Respondent claims that when she contacted him he thought she truly wanted to purchase the Domain Name. He claims she negotiated the price for purchasing the Domain Name explaining that she wanted to purchase it because they were about to re-publish the Book. Respondent told her that “although I have an Internet business in the same area I understand their need, and assured her that we will find the right price for this transaction.” Respondent claims that at the end of the conversation, Ms. Upton promised to try and get approval for the agreed price of USD 6,000. Respondent further asserts that Complainant Workman has submitted its Complaint in bad faith because by this proceeding, it is seeking to take by force something it could have obtained in a normal business way. And Complainant Workman was pretending it was negotiating a purchase for the Domain Name when Respondent had not solicited or desired to sell it.
Respondent also argues that Complainants owned the Domain Name until 2007, but neglected it since then, never contacting him before this time. Respondent asks: “Where have they been all these years? Why did they wait? Haven’t they notice[d] that the domain registration expired 4 years ago?” He asks the Panel to send Complainants back to the negotiation table. 6. Discussion and Findings
Pursuant to Paragraph 4(a) of the Policy, Complainants are required to prove each of the following three elements by a preponderance of the evidence to obtain transfer of the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
To prevail on this element, Complainants must demonstrate that the Domain Name is identical or confusingly similar to a trademark in which they have rights. This is a two-pronged test. Complainants must first demonstrate rights in a mark and then they must establish that the mark is identical or confusingly similar to the Domain Name.
The Panel finds that Complainants have established rights in the Mark by virtue of their U.S. Trademark Registrations (i.e., U.S. Reg. Nos. 3,002,425 (issued September 27, 2005), 3,002,424 (issued September 27, 2005), 3,137,137 (issued August 29, 2006)), issuing before the date Complainants filed their Complaint in this proceeding as well as before the date Respondent registered the Domain Name. As stated in the discussion following Question 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“Does Ownership of a registered trademark to which the domain name is identical or confusingly similar automatically satisfy the requirements under paragraph 4(a)(i) of the UDRP?”), “If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.” Thus, the Panel finds that Complainants have satisfied the first prong of this element.
The Panel further finds that the Domain Name is identical to Complainants’ Mark (1000 PLACES TO SEE BEFORE YOU DIE) except for the addition of the suffix “.com.” The addition of the gTLD “.com” is without legal significance from the standpoint of comparing the Domain Name to the Mark because use of a gTLD is required of domain name registrants and it does not serve to identify a specific enterprise as a source of goods or services. See SBC Communications Inc. v. Fred Bell aka Bell Internet,WIPO Case No. D2001-0602.
For the foregoing reasons, the Panel finds that Complainants have satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainants must next prove that respondent has no rights or legitimate interests in the domain name. Although the burden of proof rests with complainants, panels have recognized the difficulty of proving a negative proposition. See, e.g., Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011 (citing Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270). Therefore, the consensus view is that “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. . . . If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.” WIPO Overview 2.0, paragraph 2.1.
A respondent may demonstrate rights or legitimate interests in a domain name by showing, inter alia, that (i) before any notice of the dispute, respondent used or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) respondent has been commonly known by the domain name, even if it has not acquired trademark or service rights; or (iii) respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Policy, paragraph 4(c).
Complainants argue, and Respondent has not refuted, that they have not authorized or given permission to Respondent to register or use the Domain Name or the Mark for any purpose.
Complainants further argue in support of their position that Respondent lacks rights or legitimate interests in the Domain Name for the following reasons: (1) Respondent is not nor has it ever been commonly known by the Mark (nor did Respondent ever acquire any rights to it); (2) [before any notice of this dispute] Respondent has not used, or demonstrably prepared to use, the Domain Name in connection with a bona fide offering of goods or services. Respondent did not commercialize the Domain Name at the time Respondent obtained it in August, 2007, or any time thereafter, whether for any bona fide or legitimate business or otherwise; and (3) For the last three and a half years since Respondent registered the Domain Name, Respondent parked it as a placeholder page featuring various links to advertisements.
Respondent has failed to provide the Panel with evidence to rebut these allegations or otherwise to show any rights or legitimate interests in the Domain Name. With regard to Complainants’ first allegation – Respondent has not argued, let alone provided the Panel with any evidence showing that he is now, or has ever been, commonly known by the Domain Name. His name, Yuval Bitan, bears no resemblance to the Domain Name.
With regard to Complainants’ second allegation – Respondent has not provided the Panel with any evidence demonstrating that before any notice of this dispute he used or demonstrably prepared to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods and services. First, there is no evidence that Respondent has actually used the Domain Name. Complainants allege that Respondent has not done anything with the Domain Name since acquiring it and, in this regard, they have made of record a screen shot of the current page to which it resolves. It is a “Coming Soon!” page from Network Solutions that has links to all kinds of travel information including links to sites advertising and selling travel books, lodging and food. Respondent confirms this nonuse stating in his Response that, “the domain was parked on Network Solutions.” Also, in an email that Complainants have made of record in this proceeding, Respondent admits to Ms. Upton: “I own this domain for some time, and even that I haven’t use it for any of my projects yet, it was on my to-do list.” Although Respondent mentions in passing that for a period of time the Domain Name was pointing to his “main site – SeeBeforeYouD”, he has not provided the Panel with any evidence supporting this.
The Panel also notes that adopting a domain name that is identical to Complainants’ Mark and then parking it on a site having links to other sites advertising and selling travel books that compete with Complainants’ travel book is not a bona fide use of the Domain Name.
With regard to Complainants’ third allegation – Respondent has not demonstrated he is making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers. Even though there is no evidence that Respondent has actually used the Domain Name in conjunction with his website business (See Before You Die – Share Your Travel Experience), the evidence strongly suggests that by parking a domain name that is identical to Complainants’ Mark (used for travel-related goods and services) on a “coming soon” page with click through advertisements for travel-related goods and services, Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers. See Spencer Douglass, MGA v. Bail Yes Bonding,WIPO Case No. D2004-0261; see also, Household International, Inc. v. Cyntom Enterprises, NAF Case No. FA0010000095784 (Holding that Respondent could not have any legitimate interest in the domain name at issue where “[t]he only inference is that he knew perfectly well that he would create confusion, or was willfully blind to this fact”).
Respondent’s intent in acquiring the Domain Name was for marketing. He admits in his Response that he “decided to purchase the domain in order to protect [his] marketing efforts.” Respondent claims he acquired the Domain Name in August 2007 upon learning sometime earlier in 2007 from Network Solutions the Domain Name was “about to be free.” By this time Respondent would have been aware of Complainants’ rights in the Mark (that is identical to what was the newly available Domain Name) from the PTO office action rejecting Respondent’s application to register “See Before You Die” based upon Complainants’ prior rights. (The Panel has taken notice of the official records of the PTO and learned that the first rejection of Respondent’s application was in February 27, 2006). Moreover, by the time Respondent acquired the Domain Name, the PTO had issued multiple U.S. registrations (2005, 2006) for the Mark, the Book had been on the New York Times Bestseller List multiple times (2003, 2004) and Complainants had been selling not only the Book but goods under the Mark (since 2003). Thus, the evidence indicates that not only would Respondent have been aware of the value of the domain name that surfaced, he jumped on the opportunity to acquire it for his own commercial interests.
Lastly, Respondent seems to suggest that he has rights or legitimate interests in the Domain Name because he was using the phrase “See Before You Die” before acquiring the Domain Name. This argument strains credulity insofar as it appears based on the evidence of record that Respondent adopted the phrase “See Before You Die” and registered the domain name (December 2004) after Complainants established common law rights in the Mark (over 14 months into use of, and notoriety for, the Mark). See Workman Publishing Co., Inc., Patricia Schultz v. ICE,WIPO Case No. D2011-0414. And Respondent knew at least as of February 2006 that he could not register the phrase “See Before You Die” with the PTO because of Complainants’ prior rights in the Mark (See (“There may be a likelihood of confusion between the marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).”)). Thus, the Panel is not persuaded that Respondent’s use of the phrase “See Before You Die” before acquiring the Domain Name demonstrates Respondents rights or legitimate interests in it.
For the foregoing reasons, the Panel finds that Complainants have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The final inquiry is whether Complainants have proven that the Domain Name “has been registered and is being used in bad faith.” Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that point to bad faith conduct on the part of a respondent, as follows:
(i) The circumstances indicate that the Respondent has registered the Disputed Domain Name primarily to sell or otherwise to transfer it for valuable consideration to the Complainant, who is the owner of the trademark, or to a competitor of the Complainant.
(ii) The Disputed Domain Name has been registered to prevent the Complainant from reflecting its mark in a corresponding domain name.
(iii) The Disputed Domain Name has been registered primarily for the purpose of disrupting the business of a competitor.
(iv) Use of the Disputed Domain Name indicates an intention to attract Internet users to the Respondent’s website, for commercial gain, by creating a likelihood of confusion.
The Panel finds that Respondent registered the Domain Name in bad faith knowing of Complainants’ rights in the Mark. First and foremost, Complainants state in their Complaint, and Respondent does not deny in his Response, that he admitted during the negotiations over the sale of the Domain Name knowing about the Book and Complainants’ trademark registrations for the Mark. Also, as discussed above, by the time Respondent registered the Domain Name in August 2007, Complainants had 3 issued U.S. Trademark Registrations for the mark 1000 PLACES TO SEE BEFORE I DIE in 2005 and 2006 and they had been using the Mark since 2003 not only on the Book but also on various goods and services. Complainants have provided a record of substantial press coverage and commercial success of the Book, including achieving 6th place on the New York Times Bestseller list, before Respondent registered the Domain Name. This significant publicity itself suggests Respondent’s awareness of the work. Furthermore, however, as mentioned above, before acquiring the Domain Name Respondent knew about Complainants’ rights in the Mark from his aborted attempt to obtain a U.S. trademark registration for his “See Before You Die” mark (i.e., On Feb. 27, 2006 the PTO refused to register “See Before You Die” in view of Complainants’ prior pending applications for the Mark). Having all of this information about Complainants’ rights in the Mark and with the sudden availability of the Domain Name the Panel concludes that Respondent registered the Domain Name in bad faith.
Regarding bad faith use of the Domain Name, the only evidence of record shows that the Domain Name under Respondent’s control has resolved to a “Coming Soon” placeholder webpage on which travel-related sponsored links appear. This remains the current situation. These pay-per-click (PPC) links reflect bad faith use because the advertisements take advantage of the good will in Complainants’ Mark. See Workman Publishing Co., Inc., Patricia Schultz v. MareBerg Consulting,WIPO Case No. D2011-0219; Workman Publishing Co., Inc., Patricia Schultz v. ICE,WIPO Case No. D2011-0414. Even if, as Respondent argues, he pointed the Domain Name for some time at his own website, that is further evidence of bad faith use insofar as he would be doing so with the intention to attract Internet users to his website, for commercial gain, by creating a likelihood of confusion. Indeed, Respondent acknowledged in his Response that he “decided to purchase the domain in order to protect my marketing efforts” just as he purchased and other variations of that term like and .
In their submissions the Parties provide an account of the negotiations over the sale of the Domain Name from Respondent to Complainants. There is no disagreement that Complainants approached Respondent to purchase the Domain Name. And there is no disagreement that Respondent at one point asked for USD 10,000 to sell the Domain Name. Respondent claims after a telephone discussion that amount was negotiated down to USD 6,000 and that Complainants’ representative Ms. Upton represented she would try to obtain approval for that amount (but instead Complainants filed this proceeding). Whether the figures discussed were USD 10,000 or USD 6,000, both represent amounts that are far in excess of the registration fees Respondent likely incurred to purchase the Domain Name. Thus, such an offer to sell is often a classic indication of bad faith use. See, e.g., Telefonaktiebolaget L.M Ericsson v. iNuntius Inc.,WIPO Case No. D2005-0732; The South African Football Association (SAFA) v. Fairfield Tours (Pty) Ltd,WIPO Case No. D2009-0998. The circumstances of this exchange alone would not convince the Panel of bad faith use, but combined with Respondent’s interest in the Mark for marketing, and considering the circumstances discussed above (parking the Domain Name on a page with PPC links to travel-related goods and services), Respondent’s offer to sell the Domain Name to the trademark owner for a price in excess of the registration fees constitutes additional evidence of bad faith use.
For the foregoing reasons, the Panel finds that Complainants satisfied paragraph 4(a)(iii) of the Policy. D. Laches
Respondent argues that the Panel should deny relief to Complainants and send them back to the negotiating table stating: “[T]hey owned the domain until 2007, but they have neglected it since then, for about 4 years. During this time they never contacted me to ask for the domain. Now they come to you asking for your help? Where have they been all these years? Why did they wait? Haven’t they notice[d] that the domain registration expired 4 years ago? The Panel interprets this argument as one akin to laches however, Respondent has not shown the Panel whether laches would even apply to this proceeding. See Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011 where the panel explained that, although courts in the United States have barred the recovery of damages on the theory of laches, they generally have not done so in trademark actions where the relief sought is prospective injunctive relief. As stated by that panel, “the remedies under the Policy are similarly injunctive rather than compensatory in nature, and the focus is on avoiding confusion in the future as to the source of goods or services. Thus, UDRP panels have generally declined to apply the doctrine of laches.” Id. Furthermore, Respondent has not set forth any evidence of laches. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Harrie R. Samaras
Sole Panelist
Dated: June 17, 2011
Full & Egal Universal Law Academy